European Community Trade Mark - Amendments to Regulations

With effect from the 25th July 2005, various changes have been made to certain of the Implementing Regulations governing the European Community Trade Mark system.

The practical points to be aware of are:

Representation of a mark

Whilst under UK Trade Mark laws, the provision of an internationally recognised colour code is a requirement for registration, the OHIM have declared that indication of such an international recognised colour code is optional and omission of such information will not be fatal to the application for registration.

Division of an Application/Registration

The new rules allow for a CTM application or registration to be divided subject to the payment of the official fee. Certain periods or procedural situations are defined where a division is not admissible.  For example, it is not possible to divide goods and services that are subject to an opposition. When an opposition is pending, only those goods and services not contested by the opposition can be divided out.

Opposition Procedure

All oppositions filed against pending applications will be notified to the applicants' attorneys immediately. The OHIM have also decreed that the cooling-off period will be limited to a maximum of 24 months.

The time limit for filing translations of documents is one month and, if not observed, the documentation will be disregarded.

In opposition, if the registration upon which the Opposition relies is more than 5 years old, it is possible to ask the Opponents for proof of use of their trade mark. This proof of use request must be made within the first time limit set for the Applicant to reply to the Opposition.

Assignments

Previously, when recording an Assignment at OHIM it was necessary to pay an official fee before the changes could be effected on the Register. Following the implementation of the various changes to the Regulations, the fee to record the Assignment has been abolished.

Licences

No proof of the licence is needed unless the request for recordal of the licence is filed by the licensee.